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BPAI Rules Reissue Improper When Only Adding Narrower Claims

Reissue practice and reissue oaths are plagued by the tortured language of 35 U.S.C. § 251.  Having suffered through 3 related reissues myself, I’ve often referred to this language in 35 U.S.C. § 251 as being something “other than English.”  An expanded panel of the Patent Office Board of Appeals and Interferences (Board) in Ex parte Tanaka had to decide whether this byzantine language permitted reissue where only narrower claims were added as a “hedge” against invalidity of the original claims.  Their answer was a unanimous and emphatic “NO,” an answer the Federal Circuit and its predecessor, the CCPA, had surprisingly dodged for over 45 years.

Basically, 35 U.S.C. § 251 provides for reissue where, “through error without any deceptive intention,” the patent is “deemed wholly or partly inoperative or invalid” because the “patentee claim[ed] more or less than he had a right to claim in the patent.”  (I did say this language was something “other than English,” didn’t I?)  The reissue applicant in Tanaka filed a reissue of U.S. Patent No. 6,093,991 (on an alternator pulley) with new, narrower claims added solely “as a hedge against possible invalidity of the original claims.”  The Examiner deemed the reissue oath to be defective under 35 U.S.C. § 251 “because the error identified in the reissue declaration is not an error correctible by reissue.”  Put differently, simply adding narrower claims as insurance against invalidity of the original claims was not a valid basis for filing a reissue.

On appeal, the expanded Board agreed with the Examiner.  The expanded Board noted that the Federal Circuit in the 2007 case of In re Serenkin had said that, while 35 U.S.C. § 251 “should be construed liberally, it does not enable correction of every error.”  In fact, the BPAI noted a similar fact situation in the 1963 case of In re Handel where the examiner had rejected the reissue oath because the original patent claims were all retained.  The Board affirmed but on a different ground (the reissue claims were not for same invention).  The CCPA overturned to the Board’s ruling in Handel, but then discussed (in a footnote) the examiner’s original rationale for rejecting the reissue oath.  The CCPA then added:  “[t]he narrower appealed claims are simply a hedge against possible invalidity of the original claims should the prior use be proved, which is a proper reason for asking that a reissue be granted” (emphasis added).

Put differently, the underlined language from Handel basically said that what the reissue applicant did in Tanaka was a proper reason for reissue.  But what was also clear to the expanded Board in Tanaka was that this language in this footnote from Handel had nothing to do with why the CCPA overturned the Board’s ruling and was therefore dicta.  In fact, the Federal Circuit had acknowledged as much in the 1989 case of Hewlett-Packard Co. v. Bausch & Lomb, Inc., where the reissue applicant had also filed three new, narrower claims “as a hedge against the original patent claims being held overly broad.”  But once again, the Federal Circuit dodged the “narrower claims as a hedge” issue in favor of holding the reissue in Hewlett-Packard improper because there was no “inadvertent error in conduct” by the patentee.

The expanded Board also pointed to the 1969 case of In re Mueller as presenting “similar facts.”  In Mueller, the examiner rejected a reissue based on adding 4 additional narrower claims which the examiner viewed as an impermissible “recapture” of the non-elected species.  The CCPA in Mueller held these added claims didn’t impermissibly “recapture” the non-elected species.  But the CCPA was also completely silent on “the issue of whether the failure to present [these] narrower claims was an error correctible” by reissue.

After noting these various “near misses” by the Federal Circuit and CCPA in determining whether it was permissible to seek reissue solely to add narrower claims as a “hedge,” the expanded Board in Tanaka noted that current version of MPEP § 1402 expressly proscribed such a practice:

An error under 35 U.S.C. 251 has not been presented where a reissue application only adds one or more claims that is/are narrower than one or more broader existing patent claims without either narrowing the broader patent claim by amendment or canceling the broader patent claim (emphasis in the original).

As the expanded Board in Tanaka saw it, “the defect in this situation is not the result of the patentee claiming more or less than he had a right to claim in the patent.”  In fact, the expanded Board observed the quandary of the reissue applicant in stating the necessary “error” in the substitute reissue oath.  Instead, as happened in Hewlett-Packard, the alleged “error” in Tanaka had occurred because the patentee had “included too few claims.”  Seeking reissue based solely on adding claims as a “hedge against possible invalidity of one or more of the original claims” would “allow a patentee to simply re-prosecute an otherwise operative and valid patent.”  The expanded Board found little difference between that and the prior (and subsequently) dropped “no defect reissue” practice that the CCPA in the 1982 case of In re Dien had criticized as “as permitting a patentee to obtain an advisory opinion without seeking a true reissue of its patent because the patentee did not have to identify a true error in the original patent.”

In footnote 7, the expanded Board in Tanaka also realized it was not writing on a clean slate either in terms of prior Board decisions.  In fact, two prior 3-member Board panel decisions (the 1988 case of Ex parte Larkin, and the 1991 case of Ex parte Parks) had held that adding narrower claims solely as a ‘hedge” against invalidity of the original claims was a permissible basis for filing reissue.  But these cases proved to be no impediment as the expanded Board in Tanaka expressly overruled those aspects of Larkin and Parks to the contrary.  In conclusion, the expanded Board found “no controlling precedent requiring us to allow” the patentee to correct an alleged “error” based solely on adding narrower claims as a “hedge” against invalidity of the original claims.

The reasoning the expanded Board’s opinion in Tanaka appears to be sound.  In fact, as the expanded Board astutely noted, allowing the practice of filing reissues with added narrower claims solely as a “hedge” against invalidity of the original claims would do an end run around the “no defect” reissues proscribed by the CCPA in Dien.  The reissue applicant in Tanaka may appeal the expanded Board’s ruling, and the Federal Circuit may find something in its murky precedent to permit such “hedge” reissues.  But I frankly can’t find any fault with the reasoning (or holding) by the expanded Board in Tanaka.

© 2009 Eric W. Guttag.

Note: Thanks to Peter Zura at the 271 Patent Blog for finding this BPAI decision.  His take can be found at BPAI: Reissue Not Available When Narrowing Contains All Original Patent Claims.

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6 comments so far.

  • [Avatar for patent leather]
    patent leather
    January 7, 2010 12:28 pm

    Good article. What do you think about filing a reissue to add a machine to method claims in order to pass the Bilski machine or transformation test? Depending on the outcome of the Supreme court decision, I may have to do this in a number of cases.

  • [Avatar for Michael Risch]
    Michael Risch
    January 7, 2010 05:22 pm

    I think this seems like the right outcome to me. I think that you should be able to add narrower claims, but you have to give up the broader claim with an oath that you didn’t realize it was invalid. If you keep the broader claim, then you cannot claim you made an error by claiming too much. This is easier to sell, of course, after a court invalidates a claim.

    I suppose a middle ground would be to say that you didn’t know about prior art, and thus you need to claim less than you intended. But to do that, you would have to argue that the broad claim seeks too much, which would create an enforcement estoppel, I would think.

    I tend to think patent leather’s situation fits 251 – after all, the claims were made under a mistaken view of what the patentable subject matter was.

  • [Avatar for EG]
    EG
    January 7, 2010 07:31 pm

    Patent Leather/Michael,

    Thanks for your comments. Regarding your specific situation PL, I’m not sure whether simply adding new claims because a “change in the law” but doing nothing with the original claims (or spec) will pass muster under Tanaka. Mind you, if you can do something to alter the original/claims spec to corect an “error” potentially created by Bilski, you might be able to get these new claims in more readily. Just remember, as I said in my article, that the reissue oath can be a real challenge.

    Another thought is to consider reexamination, especially if you can create a potential “substantial new issue of patentabiity.” Once the reexamination moves foreward, you could then add the new claims, especially since all issues (including those under 35 USC 101) come into play.

    I might, at this point, take what I’m saying above with a “grain of salt” as sort of I’m thinking out loud. But may be these “thinking outside the box” suggestions can be used to accomplish your objective. Good luck.

  • [Avatar for Sean]
    Sean
    January 14, 2010 06:38 pm

    After reading the first two paragraph of this article, I must ask: but why did they file the reissue app in the first place “as a hedge against possible invalidity of the original claims”? Was there an infringement suit in the offing? Or they themselves wanted to narrow claims for better marketability of their invention? In other words, why fix if not broken? I will now proceed to read the rest of the article, but this question was bothering me, so had to ask. Thank you.
    Sean

  • [Avatar for EG]
    EG
    January 15, 2010 01:54 pm

    ” I must ask: but why did they file the reissue app in the first place.”

    Sean,

    A very good question and one I don’t have an answer for. Enjoy reading the rest of the article.

  • [Avatar for Sean]
    Sean
    January 20, 2010 04:45 pm

    Explanation to my above question on this link: http://www.patentlyo.com/patent/2010/01/reissue-cannot-merely-add-new-dependent-claims-without-cancelling-the-broader-claims.html
    See “Notes”.